An Innovator’s Dilemma: Design or Utility Patent?

by Marin Cionca and Iris Kim

[Originally published on August 24, 2015 in Orange County Business Journal. Republished with permission.]

Should protection be sought with a design patent, or a utility patent? When innovators create something new, this becomes an important question to answer in order to secure the best protection for their inventions.

A utility patent protects structure and function, whereas a design patent protects ornamental appearance. Using a ballpoint pen as an example, if an inventor created a pen with a unique look to it, the inventor should apply for a design patent. However, if an inventor has conceived of a different way for the ballpoint pen to work, a utility patent would be the appropriate choice. In either case, the aspects to be patented must be new and non-obvious.

Obtaining a design patent for the appearance of a pen would prevent others from making, using, selling or importing another pen that looks similar, regardless of how differently the pen functions. However, a utility patent for the way a pen works, perhaps for the way it writes, or opens and closes, would prevent others from making, using, selling or importing another that works in that same way, even if it looks very different.

In some cases, it may be beneficial to file design and utility patent applications, if the invention has novel aspects in both appearance and function. A design patent may add another layer of protection for a device that one has patented its structure or function, since aesthetics can be a large factor in marketing a product.

Costs have to be considered. Design patent applications are much simpler, and thus, cost less to prepare and file; additionally, there are no maintenance fees to pay during a design patentʼs term of fifteen years after issue. A utility patent owner must pay maintenance fees three times throughout its term of twenty years from the earliest priority date, adding to the overall cost.

Knowing which particular features are the most important inventive aspects one wishes to protect with a patent is a crucial step in identifying an invention.

These features may be the way something functions, or how a process works, or how a device looks, or perhaps all of the above.